Protecting Your Assets

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Now that you understanding the basics of intellectual property law, here are some important applications of those principles:

Identify Eligible Assets

The first step of a strong intellectual property protection program is to identify company assets eligible for protection, such as:

Name and Logo. Your name and logo, if applicable , should be federally trademarked as early as possible.

Table 5.4. Protections Available for Developer Assets by Category of Rights

Trade Secret

Source code, object code, machine code, firmware, any concepts, ideas, methods , processes, or documents related to the creation of software or game concepts, including characters , storylines, drawings, business plans and methods, marketing plans or customer lists, databases, and so forth.

Anything that can be fixed in a tangible medium (including computer media): source, object and machine code, certain automated databases, artwork, design docs, budgets , and business plans, some UI and program structure, sequence and organization.

Trademark

Company name, logo, name of games and technology, distinctive branding sounds or colors. Names , character designs and slogans of original IP, characters, weapons, and other valuable marks.

Utility Patent

Applied algorithms, display presentation, menu arrangement, editing functions, control functions, user interface features, compiling techniques, program languages, translation methods, utilities, formulae to control program execution or process data, and more.

Design and Business Documents. Design and business documents can be registered with the Copyright Office, but they will lose their trade secret protection. What may be a better solution is to mark documents with the legends and notices discussed in the follow-ing "Protecting Your Assets: Enforcement: Notices" section and to only disclose the documents to parties under NDA. The documents should be marked with both confidentiality and copyright notices.
Tools, Technology, Processes, and Game Code. Tools, technology, processes, and game code may be protected with trade secrets, copyrights, patents (if the product qualifies) and several permutations thereof. Combinations may be used such as protecting every thing as a trade secret, and applying for registered copyrights using the trade secret registration, and patenting a small segment of the code that is particularly inventive . All creations should have confidentiality and copyright notices embedded in their code. Where any of these creations will be marketed with a certain name, like the "Unreal Engine," it should be registered for federal trademark.
Content. The audiovisual content of games should be registered at the same time as the actual game code in one registration by including a written synopsis of the game and a half-inch VHS tape of the audiovisual elements. Pitch bibles and prototypes and demonstrations may also be registered. It is also advisable to trademark the name of the property and the main character names and designs. The timing of these registrations can be importantyou may not want your copyrights registered and published too early, for exampleso consult an IP attorney when planning your strategy.

How Do You Protect Your Assets?

You want to be able to protect your IP from infringement by counterfeiters (for example, another company duplicating your game, or lifting portions of your code for their own uses), and gray marketers, who illegally distribute product (Example: Selling U.S. versions of a game in Australia months before the Australian release). For the most part, registration and enforcement of rights in games (not the underlying technology)which are a considerable expensefall to the publisher. The publisher is the party with the most at stake, and it can't afford to risk incorrect protection. However, if you are doing country-by-country publishing and distribution instead of a centralized release through one of the bigger publishers, piracy and gray marketing are your concerns. There are a few things you can do to buffer your property from the chaos of global intellectual property administration:

Obtain local IP protections. Register where necessary. Contact local counsel to vet issues and strategize.
Choose your local business partners wisely. If working with a regional publisher, ask for references from other game developerspreferably from a different country than the publisherand get in touch with them. Ask them about their anti-piracy programs and how they plan to enforce your IP in their territory.
Price your game at a level suitable to the local market.
To prevent gray marketing, schedule simultaneous releases in all countries speaking a given language.
Have your local manufacturers create box text and art customized for that country, ideally with the country name on the outside of the box to easily identify gray marketed goods if they turn up elsewhere.

Table 5.5. Protections available by asset type

Tools, Technology, Code

Copyrights. Mark with copyright legend in code and on all media carrying the code. Register with Copyright Office using the trade secret registration.

Trade Secrets. Mark all qualifying code and media carrying code with trade secret legends.

Patents. Innovative software may qualify for patent protection.

Best Practice: combine methods. Example: Register the game with the copyright office, using the trade secret application; maintain all code as trade secret. If a segment of the game code is particularly innovative, that may be patented without sacrificing the trade secret status of the rest of the game.

All creations should have confidentiality and copyright notices embedded in their code.

Design and Business Documents

Copyrights. Should be marked with copyright legend.

Can be registered, but may lose their trade secret protection.

Best Practice: Trade Secret. Mark documents CONFIDENTIAL & PROPRIETARY and only disclose to parties under NDA.

Art and Audiovisual Game Elements

Copyrights. All material, registered or not, should bear copyright legend.

Audiovisual elements of the game can be registered together with game code using Form TX by including a written synopsis of the game and a 1/2" VHS tape of the audiovisual elements.

Pitch bibles, prototypes and demonstrations may be registered.

Trademark the name of the property and main character names and designs.

Names, Logos, Slogans

Trademarks protect names, logos, character designs and slogans of the company and its original IP (name of game/major characters, character slogans, special weapons and vehicles, etc.).

Registration

Patents and trademarks should be registered with the USPTO and copyrights should be registered with the Copyright Office, respectively, to gain maximum protection against infringement and piracy.

Enforcement

Prevention is the cheapest form of enforcement: the goal of your enforcement program is to avoid having to take any kind of expensive court action. Three tools of your enforcement program are notices, mod licenses, and international protection strategy.

Notices

The first step in enforcing your property is putting the world on alert that it is protected. Notices, also known as "legends," may be different for "published" versus "unpublished" software. The distinction is important because making software public has implication for its trade secret status as well as its patentability . Published software is that which is mass marketed and distributed without a signed license (like a game). Unpublished software, if distributed at all, is only available to a limited number of users under signed licenses and NDAs and marked "CONFIDENTIAL" (like a licensed technology).

Software

Unpublished software should bear the following notice:

NOTE

[COMPANY] CONFIDENTIAL AND PROPRIETARY

THIS WORK CONTAINS VALUABLE CONFIDENTIAL AND PROPRIETARY INFORMATION. DISCLOSURE, USE OR REPRODUCTION WITHOUT THE WRITTEN AUTHORIZATION OF [COMPANY] IS PROHIBITED. THIS UNPUBLISHED WORK BY [COMPANY] IS PROTECTED BY THE LAWS OF THE UNITED STATES AND OTHER COUNTRIES. IF PUBLICATION OF THE WORK SHOULD OCCUR THE FOLLOWING NOTICE SHALL APPLY: " COPYRIGHT (c) 20XX [COMPANY] ALL RIGHTS RESERVED ."

Or, where space is too limited:

NOTE

These notices should be embedded in the header of all code modules during development as well as any other media in which the software appears, including labels and screen display of demonstrations.

Once the game is published, copyright notices should be shown at the initial screen display of the game. The dates on the copyright notices should be the first year of copyright and updated to include every subsequent year of copyright, for example: " 2000-2003 [Company]. All Rights Reserved."

Patented technology should bear a legend of either "Patent Pending" if the application is pending or "Patent No.-," as applicable.

Documents

The same legend:

NOTE

[COMPANY] CONFIDENTIAL AND PROPRIETARY

should appear on the first page of all confidential trade secret business and marketing plans, design and technical documents, prototypes and demonstrations, source listings, or any other documentation of proprietary software.

Content

All content should bear the legend "COPYRIGHT ( ) 20XX [COMPANY] ALL RIGHTS RESERVED." as well as the above legend if the content is trade secret protected. If the content contains any trade- or servicemarks, attach the applicable notation ¢, ^SM , or .

Mods

There is a healthy traffic in user-generated modifications and contributions to games known as "mods." Mods are generally thought of as being good for business because they extend a product's life by adding content and increasing user involvement with the property (making sequels more likely). As discussed, copyrights on software programs reserve the right to modify and distribute copies of programs. However, many game developers provide tools to create modifications and a limited license to users for non-commercial creation and distribution of mods. The key is that users may not have any commercial purpose in their activities.

NOTE

CAUTION

It is very important to have a license in place for these rights; if users do not have to sign a license to modify the software, a naked license to the trademarks may be created that can diminish the owner's rights to the trademark.

Key terms of mod licenses:

No modification or distribution may be for any commercial purpose.
Users assent to the license with a "click-wrap" end user license agreement in which the "I Agree" button must be clicked to download the mod tools.
Mods must only function with the full version of the game, not the demo version.
Hosting of multiplayer versions of the game for non-commercial purposes is allowed.
Users may not use the company's IP in advertising or promotion.

International Considerations

Protecting intellectual property abroad is complex and extremely expensive. Many countries do not enforce rights against infringers with anything approaching vigor. The registration and application processes must generally be repeated in every country. There are various treaties that have tried to streamline the process and create more uniform enforcement procedures, but we are still a long way off from a universal standard.

One important treaty, the Paris Convention, has over 140 signatory countries that have agreed to give the intellectual property of foreigners the same rights that it affords its citizens . The second major facet of the Paris Convention is the Right of Priority . The Right of Priority gives you one year to file for a patent, six months for a trademark, from the date you filed in your home country, with the effective date of the foreign registration being your home country filing date. Example:

Table 5.6. International IP Protection

Trade Secret

Trade secrets protected in US

Notice recommended;

Registration required to sue and receive certain kinds of compensation;

Company can be owner of copyright;

No moral rights for author

Trademark

Limited rights from use;

First to use owns the mark;

Marks must be used or risk cancellation;

Use must be substantial commercial use;

Only federally-registered marks may use the symbol

Utility Patent

First to invent owns the patent;

Must file within one year of first sale, public use, or printed disclosure;

Patent application can be kept secret until issued;

Costly registration, maintenance payments

Worldwide

Trade Secret

Trade secrets not protected in many countries, and poorly protected in others; Tip: Disclosure should be avoided where possible, and always under an NDA; Companies with offices abroad should conduct extensive employee education about existence and protection of trade secrets;

Trade secret agreements may be unenforceable in some countries unless approved by government agencies;

Some countries limit the royalty period and amount of royalties payable for trade secret-protected intellectual property

Notice required;

US copyrights recognized in many countries;

Some countries do not allow a company to own a copyright;

Moral rights in some countries give the author rights, even after selling the copyright, to control modification of the work;

Trademark

Paris Convention signatory countries give US trademark registrants six month "right of priority" to file the mark abroad;

Rights arise only through registration;

First to file owns the trademark;

Some countries make use of the symbol on a mark illegal if the mark is not registered in that country;

"Use" required to maintain registration, but can be as flimsy as a single advertisement

Utility Patent

Paris Convention signatory countries give US patent registrants one year "right of priority" to file utility patent abroad;

Patents must generally be registered in every country;

First to file owns the patent;

Inventions generally must be filed for registration before first sale, public use or printed disclosure anywhere in the world;

Many countries recognize US filing dates as long as foreign applications are filed within one year of US application;

Patent applications publicly available after around 18 months from US filing date;

Costly registration, translation, maintenance payments;

Some countries require that the patented invention be manufactured in that country within three years or registration may be voided

Developer A files a trademark in the U.S. on January 8, 2003. Developer files the same trademark in Country ˜ on May 3, 2003. Developer A then files the trademark in Country ˜ on June 1, 2003. To Developer 's chagrin, Developer A has priority and gains the trademark. Again, your publisher will most likely insist on administering the protection program, but here is a summary of the differences in different categories around the world:

NOTE

CAUTION

Some countries require trade secret agreements to be reviewed by a particular gov ernment agency and, unless the agreement is approved, the agreement is unenforceable.

Trade Secrets

The trade secret concept is relatively new to many countries, if it exists at all. It is therefore doubly important to avoid disclosure where possible, have all recipients sign NDAs that have been reviewed by foreign counsel, plaster notices of confidentiality all over materials, and educate any employees or contractors about trade secret protection.

NOTE

CAUTION

In ventures where royalties are paid in exchange for trade secrets, some countries limit the amount of royalties and duration of the royalty period. Check these limits before exe cuting any such agreements.

Copyrights

U.S. copyrights are valid in many overseas nations thanks to the Berne Convention treaty. Copyright notices should be placed on all materials and media. Local registration in Berne Convention nations is not necessary, but it may provide certain legal benefits like greater money awards in litigation. In the U.S., a company can own a copyright, but some countries afford ownership to individuals only. Finally, the U.S. has very limited "moral rights" in created property, but some countries give the author the right to object to any modification of the work that would prejudice or compromise the author's honor. This has been used to hold development hostage until money could be found to assuage the author's honor ; be sure your foreign counsel reviews your NDAs and invention assignment agreements to prevent such cheap chicanery.

While the copyrights may be valid overseas, vigorous enforcement is another matter. It is extremely expensive to enforce copyrights overseas, usually requiring the retention of local agencies specializing in anti-piracy measures. This is generally only cost-effective at a very high level of success. U.S. Customs agents work to intercept pirated goods here and abroad, but they can only catch so much of the traffic in pirated goods.

Trademarks

Trademarks have the benefits of Paris Convention Rights of Priority, giving U.S. registrants six months from the date of filing to file abroad. There are four primary differences in the trademark schemes of the U.S. and the rest of the world:

Rights through registration only. In the U.S., some rights to a trademark can be acquired merely by using the mark in commerce. In most other countries, one only gains trademark rights through registration.

NOTE

TIP

Keep records for each country in case you need to prove "use."
First to file. Most countries award trademark ownership to the first party to file, not the first party to use the mark in commerce. This has resulted in many multinational corporations preparing to sell goods abroad only to discover that a "registration pirate" has registered their mark and is willing to sell it back at a markup.
Commercial Use. In the U.S., a mark can be cancelled if not used in a meaningful way in commerce. Abroad, many countries will also cancel your mark for non-use, but the flimsiest usean advertisement, for instancewill qualify as "use."

NOTE

TIP

Use the ¢ symbol if you are not sure to which countries your product will be exported.
Use of the . In the U.S., only registered trademarks are allowed to bear the symbol. Abroad, use of the symbol if the mark is not registered in that particular country may be illegal.

Patents

Patents must be filed in every country individually. There are two territorial officesthe European Patent Office and the OAPI in Africathat will accept and review the validity of one application for registration in its member countries. If the application is accepted, the patent must still be formally registered in every individual country.

There are three main differences between the U.S. and the rest of the world, as far as patents are concerned :

First to file, not first to invent. Most foreign countries award patents to the first party to file, not the party who can prove they were the first to invent.
First sale. Unlike the United States, where you must file within one year of the first sale, public use, or printed description of the invention, a patent elsewhere must be filed prior to any public disclosure or use. However, Paris Convention signatory countries give you 12 months from the date of your U.S. filing to apply.
Publication of Application. In the United States, an applicant may request that its application not be published until the patent is actually issued. Most foreign countries will publish the application around 18 months after the U.S. filing date. Example: Developer A files in the U.S. on January 6, 2003. He then files in Country B on December 5, 2003. Country B will publish the application around June 6, 2004. This can compromise the trade secret status of any material in the application.

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